Appeal No. 1999-1631
Application 08/733,586
at 7, l. 1) when xp2, the center point of gate 144 (id. at 6,
ll. 22-24), is 7.0 microns (id. at 7, l. 2).
The rejection of claims 2, 6, 7, and 14 under § 112, ¶ 2
is therefore affirmed.
G. The § 102 rejection of claims 1, 2, and 4-15
In view of our affirmance of the § 112, ¶ 2 rejection of
claims 2, 6, 7, and 14, we cannot affirm the § 102 rejection
to the extent it is directed to those claims. Cf. In re
Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962)
(improper to rely on speculation as to meaning of claim for §
103 purposes).
Consequently, we will consider the merits of the § 102
rejection only as to claims 1, 4, 5, 8-13 and 15.
Although, as appellant correctly notes (Brief at 4), the
final Office action failed to identify the paragraph of § 102
on which the rejection is based, the Answer (at 7) indicates
it is based on paragraphs (a), (b), and (e). Also, the 4
manner in which the examiner proposes to read the claims on
the reference, which was not explained in the final Office
4Where, as here, the reference constitutes a statutory
bar under § 102(b), there is no need to alternatively base the
rejection on § 102(a) or (e).
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